IN THE HIGH COURT OF DELHI AT NEW DELHI

(CIVIL APPELLATE JURISDICTION)

CIVIL APPEAL NO.:- ………… of 2020

[Under Section-96, The Code of Civil Procedure,1908]

IN THE MATTER OF :

Hummingwayy and Tumblrr Pvt Ltd

APPELLANT

Versus

Hiralal Megabrands Pvt. Ltd

RESPONDENT

MEMORIAL ON BEHALF OF APPELLANT

Dated - 17/11/2020

Place: New Delhi

Through :

Advocate for the Appellant

Name : AMIT KUMAR MAURYA

Exam Roll No. : 180090

Semester : V

Section : E
 TABLE OF CONTENTS

INDEX OF AUTHORITIES ………………………………………………………………….3

LIST OF STATUTES REFERRED

LIST OF JUDICIAL PRECEDENTS

LIST OF ABBREVIATIONS

LIST OF BOOKS REFERRED

LIST OF ARTICLES REFERRED

LIST OF ONLINE SOURCES

STATEMENT OF JURISDICTION…………………………………………………………….6

STATEMENT OF FACTS……………………………………………………………………….7

STATEMENT OF ISSUES……………………………………………………………………….8

SUMMARY OF ARGUMENTS…………………………………………………………………9

ARGUMENTS ADVANCED…………………………………………………………………...11

PRAYER……...………………………………………………………………………………….20
 INDEX OF AUTHORITIES

➢ LIST OF STATUTES REFERRED

1. The Code of Civil Procedure, 1908 (Act No. 5 of 1908)

2. The Trade Marks Act, 1999 (Act no. 47 of 1999)
3. Paris Convention for the Protection of Industrial Property (“Paris Convention”), 1883
4. The World Trade Organization (“WTO”) Agreement on Trade Related Aspects of
Intellectual Property Rights (“TRIPS Agreement”), 1994
5. World Intellectual Property Organization’s (WIPO) Joint Recommendation Concerning
Provisions on the Protection of Well-Known Marks, 1999

➢ LIST OF JUDICIAL PRECEDENTS

1. Carrefour v. V. Subburaman, 2007 (35) PTC 225

2. Kamal Trading Co. v. Gillette UK Limited, 1988 (8) PTC 1 (BOM)
3. Daimler Benz Akietgesellschaft v. Hybo Hindustan, AIR 1994 Del 239
4. Whirlpool Co &Anr v. N R Dongre, 1996 (5) SCC 714
5. Telemart Shopping Network Pvt Ltd vsTvc Life Sciences Ltd & Anr, Delhi High Court
CS(COMM) 115/2016
6. Consumer Distributing Co. v. Seiko Time Canada Ltd, (1984) 1 S.C.R. 583
7. Laxmikant V. Patel v. vs. Chetanbhai Shah, AIR 2002 SC 275
8. ICC Development (International) Ltd. vs. Arvee Enterprises, (2003) 26 PTC 245(DEL)
9. Erven Warnik Besloten Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. & Anr,
(1979) 2 All ER 927
10. Horlicks Ltd. Vs. Bimal Khamrai , (2003) 26 PTC 241 (Del.)
11. Ramdev Food Products Pvt Ltd v. Arvindbhai Rambhai Patel, [AIR 2006 SC 3304]
12. M/s Power Control Appliances v. Sumeet Machines Pvt. Ltd, (1994) 2 SCC 448 : 1995
(15) PTC 165 (SC)
13. John Inc. v. Doctor & Company, 2002(24) PTC 29 (Del)
14. Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, 2001 PTC 541 (SC)
15. Rob Mathys India Pvt. Ltd v. Synthes Ag Chur, 1997 (17) PTC 669 (DB)
16. Milmet Oftho Industries v. Allergen Inc., (2004) 12 SCC 624
Page | 3
 ➢ LIST OF ABBREVIATIONS

SC Supreme Court of India

HC High Court

TM Trade Mark

Hon’ble Honourable

& And

u/s Under Section

Sec. Section

Art. Article

v. Versus

AIR All India Reporter

i.e. That is

PTC Pre-Trial Conference

SCC Supreme Court Cases

SCR Supreme Court Reports

CS(COMM) Civil Suit(Commercial)

➢ LIST OF BOOKS REFERRED

1. C. K. Takwani , Civil Procedure with Limitation Act, 1963 (Eastern Book Company, 8th
edition, 2017)
2. V.K. Ahuja, Intellectual Property Rights in India 934 (LexisNexis, 2009)

Page | 4
➢ LIST OF ARTICLES REFERRED

1. Sunil Prakash Dhadwad , “Passing off and Infringement of Well-Known Trade Mark’s in
India”, International Journal of Law Management & Humanities(2018)
2. Manzoor Elahi Laskar, “Passing off and Infringement of Trademarks-India”, SSRN
Electronic Journal (2013)
3. Annu Tiwari, “Passing off and the Law on ‘Trade Dress’ Protection”, Journal of
Intellectual Property Rights(2005)
4. Zainab Sanna Tarannum, “Tort of passing off trademark in India”, International Journal of
Law(2017)

➢ LIST OF ONLINE SOURCES

1. https://indiankanoon.org/
2. https://www.scconline.com/
3. https://en.wikipedia.org/
4. https://www.researchgate.net/
5. Mukul Baveja, “India: Trans-Border Reputation: Protection Of Foreign Trade Marks In
India” (26 November 2018) available at https://www.mondaq.com/
6. Nishka Tyagi, “India: Passing Off For Registered And Unregistered Trademarks”(12
September 2018) available at https://www.mondaq.com/

Page | 5
 STATEMENT OF JURISDICTION

The Appellant respectfully submit to the jurisdiction of this Hon’ble Court against the final order
and judgment of the Hon’ble District Court over the instant matter by virtue of section 96 of The
Code of Civil Procedure,1908 to entertain, adjudicate and decide the present Appeal.

The relevant provision invoked is reproduced hereunder-

Sec- 96 of Code of Civil Procedure 1908:- "Appeal from original decree"

(1) Save where otherwise expressly provided in the body of this Code or by any other law for the
time being in force, an appeal shall lie from every decree passed by any Court exercising original
jurisdiction the Court authorized to hear appeals from the decisions of such Court.

(2) An appeal may lie from an original decree passed ex parte.

(3) No appeal shall lie from a decree passed by the Court with the consent of parties.

(4) No appeal shall lie, except on a question of law, from a decree in any suit of the nature
cognisable by Courts of Small Cause, when the amount or value of the subject-matter of the
original suit does not exceed three thousand rupees.

Page | 6
 STATEMENT OF FACTS

1. Hummingwayy and Tumblrr Pvt. Ltd. is a huge conglomerete primarily engaged in designing,
marketing and selling a wide variety of premium segment fashionable clothing and ancillary
products for women, men, teenagers and children under the trademark ‘HumTum’ [written in a
stylised manner with the device of daisies(flowers) in the background], which is clearly an
abbreviated form of the company’s full name , and has continuously used its aforesaid trademark
since the year of its establishment in 1966. The company is based in Norway and secured its
earliest registration for the mark in the year 1970 in the United Kingdom.

3. Currently it has more than 4500 outlets in more than 190 countries of the world and its outreach
is growing by the day. With the boost in e- commerce, and owing to the high status and reputation
the products of the company are available in India through Amazon/ Myntra and other similar
online shopping service providers.

4. In order to serve the people of India by making readily available its premium quality of goods,
it has set up a subsidiary in New Delhi for the purpose of carrying on business under the
trademark ‘HumTum’, on behalf of the parent company. Though the company is yet to formally
start its operations in India, but has applied for registration in India. The status of the application
in May 2020 is that it is sent to Vienna Codification.

6. During market research the plaintiff’s company came across the goods of an Indian company
named Hiralal Megabrands Pvt. Ltd.(the respondent in this matter) which is engaged in the same
business as of the appellant(plaintiff) and found that the latter was using a confusingly similar TM
‘HumTum’ for products/goods similar to plaintiff’s since the year 2011. They were also offering
goods bearing the mark ‘HumTum’ through online shopping portals such as www.jabong.com,
www.amazon.com, www.myntra.com etc. and it’s biggest outlet is in Saket, Delhi.

7. The appellant(plaintiff) in this case had filed a suit for passing off, against Hiralal Megabrands
Pvt. Ltd after a cease and desist notice was not complied with by the latter but the Hon’ble
District court denied any reliefs sought, on the grounds that TMs were quite different in
appearance and that both the brands operated in two different territories; that the defendant
honestly and bonafidely conceived and adopted the trademark ‘Hum Tum’, being a popular
expression of Hindi language; that the defendant has been continuously, extensively and
uninterruptedly using the same since the year 2011; that the plaintiffs were not entitled to any
relief on the ground of acquiescence and waiver.

8. Hence the appellant(plaintiff) has brought up the matter before this Hon’able High Court by
way of appeal against the order of the Hon’ble District court maintaining that the judge failed to
properly appreciate a few grounds like the defendants being in the same line of business as the
plaintiffs and ignored a number of (other) parameters while deciding the case.

Page | 7
 STATEMENT OF ISSUES

The following issues have arisen for determination before the Hon’ble court in the instant matter:

ISSUE 1:

Whether the appellant’s TM “HumTum” is a well known trademark as to have acquired

international or transborder reputation and is subject to protection from ‘passing off’ or
not?

ISSUE 2:

Whether the alleged misrepresentation of the TM is maintainable on the ground that the
defendant has honestly and bonafidely conceived and adopted the trademark ‘HumTum’?

ISSUE 3:

Whether the plaintiffs are not entitled to any relief on the ground of acquiescence and
waiver as the defendant has been continuously, extensively and uninterruptedly using the
same since the year 2011.

ISSUE 4:

Whether the hon’able district judge failed to properly appreciate the ground that the
defendant’s TM is deceptively similar to that of the plaintiff’s TM so as to cause confusion
in the mind of the general public commonly purchasing them since the defendants are in the
same line of business as that of the plaintiffs?

Page | 8
 SUMMARY OF ARGUMENTS

ISSUE 1:

Whether the appellant’s TM “HumTum” have acquired international or transborder

reputation and is subject to protection from ‘passing off’ or not?

It is humbly submitted before this Hon’ble High Court that the TM of HMT is eligible to be
protected under Indian Legislation i.e. The Trade Marks Act, 1999 as well as under International
Instruments i.e. Paris Convention for the Protection of Industrial Property, The World Trade
Organization(WTO) Agreement on Trade Related Aspects of Intellectual Property Rights
("TRIPS Agreement"), World Intellectual Property Organization's (WIPO) Joint
Recommendation Concerning Provisions on the Protection of Well-Known Marks and Patent
Cooperation Treaty(PCT) which were the driving force in introduction of The Trade Marks Act,
1999 in place of the old Trade Mark Act which was enacted in 1958.

ISSUE 2:

Whether the alleged misrepresentation of the TM is maintainable on the ground that the
defendant has honestly and bonafidely conceived and adopted the trademark ‘HumTum’?

It is humbly submitted before this Hon’ble High Court that it is not necessary to show that the
misrepresentation was done with malafide intention or dishonestly.

Page | 9
ISSUE 3:

Whether the plaintiffs are not entitled to any relief on the ground of acquiescence and
waiver as the defendant has been continuously, extensively and uninterruptedly using the
same since the year 2011.

It is humbly submitted before this Hon’ble High Court that the appellants cannot be held to have
acquiesced to the use of the mark by the respondents, so as to enable the respondents to claim
protection under Section 33 of the Trademarks Act,1999.

ISSUE 4:

Whether the hon’able district judge failed to properly appreciate the ground that the
defendant’s TM is deceptively similar to that of the plaintiff’s TM so as to cause confusion
in the mind of the general public commonly purchasing them since the defendants are in the
same line of business as that of the plaintiffs?

It is humbly submitted before this Hon’ble Court that the respondents and the appellants are in the
same line of business which ought to be given due importance and consideration to assess
whether the TM of the respondents is deceptively similar to that of the appellants TM so as to
cause confusion in the mind of the general public commonly purchasing them and the loss
suffered by the petitioner.

Page | 10
 ARGUMENTS ADVANCED

ISSUE 1:

Whether the appellant’s TM “HumTum” is a well known trademark and is subject to

protection from ‘passing off’ or not?

Article 6bis of the Paris Convention lays down the guidelines for member countries to deal with
well-known marks which necessitates that member countries should accord special protection to
well-known marks by refusing or cancelling the registration of confusingly similar or identical
trade marks and also by prohibiting their use in their respective territories, irrespective of the fact
whether the well-known mark is registered or used in the country where it seeks protection.

Article 16(2) of the TRIPS Agreement extended the umbrella of protection given to well-known
marks to include services, which was earlier limited to only goods under Article 6bis of the Paris
Convention and provides that member countries should consider knowledge of the relevant sector
of public about the impugned trade mark to conclude whether that trade mark is well-known or
not.

World Intellectual Property Organization's (WIPO) Joint Recommendation Concerning

Provisions on the Protection of Well-Known Marks sought to lay down a uniform criteria for its
members to determine whether a trade mark was well known in their respective territories under
Article 2(1)(b). Article 2(2), of the Joint Recommendation elaborates on the relevant sector of
public needs to be considered to ascertain the recognition of a mark in a particular territory.

The Trademarks Act,1999 was brought into existence to give effect to the signing of the TRIPS
agreement for protection of TMs of international trading entities in India i.e well known
trademarks from illegal passing off solely on the basis of the lack of registration in the country as
well as to incorporate the optional guidelines promulgated by WIPO's Joint Recommendation on
the protection of well-known marks.

In Carrefour v. V. Subburaman1 , the Hon’ble court held that “In order to claim protection as a
"well-known trade mark" contained in Section 2(1)(zg), the applicant should establish several

1
Carrefour v. V. Subburaman, 2007(35) PTC 225
Page | 11
factors in enlisted sub-section (6) of section 11 and that in order to claim protection as a mark
recognized in a relevant section of the public, the applicant should established the factors enlisted
in sub-section (7) of Section 11”.

The definition of the term "well known trade mark", contained in Section 2(1)(zg)

"Well-known trade mark", in relation to any goods or services, means a mark which has become
so to the substantial segment of the public which uses such goods or receives such services that
the use of such mark in relation to other goods or services would be likely to be taken as
indicating a connection in the course of trade or rendering of services between those goods or
services and a person using the mark in relation to the fist-mentioned goods or services."

Section 11 (6) and (7) read as follows:-

"The Registrar shall, while determining whether a trade mark is a well-known trade mark, take
into account any fact which he considers relevant for determining a trade mark as well-known
trade mark including-

(i) the knowledge or recognition of that trade mark in the relevant section of the public
including knowledge in India obtained as a result of promotion of the trade mark;

(ii) the duration, extent and geographical area of any use of that trade mark;

(iii) the duration, extent and geographical area of any promotion of the trade mark, including
advertising or publicity and presentation, at fairs or exhibition of the goods or services to which
the trade mark applies;

(iv) the duration and geographical area of any registration of or any application for registration
of that trade mark under this Act to the extent they reflect the use or recognition of the trade mark;

(v) the record of successful enforcement of the rights in that trade mark, in particular, the
extent to which the trade mark has been recognised as a well- known trade mark by any Court or
Registrar under that record.

(7) The Registrar shall, while determining as to whether a trade mark is known or recognized
in a relevant section of the public for the purposes of sub-section (6) take into account -

(i) the number of actual or potential consumers of the goods or services;

Page | 12
(ii) the number of persons involved in the channels of distribution of the goods or services;

(iii) the business circles dealing with the goods or services, to which that trade mark applies."

Counsel humbly submits that the guidelines so as to recognize a well known company have been
laid down in u/s 11(6) and 11(7) of the act and further pleads that the appellants company HMT
Pvt. Ltd. fulfills the criteria laid down in the section metioned.

There are enough evidence to support the claimed proposition. The very fact that the appellants
company is using the TM since 1966 and the company secured its earliest registration for the
mark in the year 1970 in the United Kingdom. It has more than 4500 outlets in more than 190
countries of the world and its outreach is growing by the day. Moreover, with the boost in e-
commerce, products of the company are available in India through Amazon/ Myntra and other
similar online shopping service providers, should be sufficient to establish that the company is a
well known company.

In Kamal Trading Co. v. Gillette UK Limited2 case, an injunction was sought by the claimant
against the use of the mark "7 o' Clock" by an Indian company. The question for consideration
before the Division Bench of the Bombay High Court was whether the goodwill in the trade mark
"7 o' Clock" stood extinguished because of non-availability of blades bearing the said mark in
India after the year 1958. While deciding in favour of the claimant the Bombay High Court held:

" In our judgment it is not possible to conclude that the goodwill or the reputation stands
extinguished merely because the goods are not available in the country for some duration. It is
necessary to note that the goodwill is not limited to a particular country because in the present
days, the trade is spread all over the world and the goods are transported from one country to
another very rapidly and on extensive scale. The goodwill acquired by the manufacturer is not
necessarily limited to the country where the goods are freely available because the goods though
not available are widely advertised in newspapers periodical, magazines and in other medias. The
result is that though the goods are not available in the country, the goods and the mark under
which they are sold acquires wide reputation."

In Daimler Benz Akietgesellschaft v. Hybo Hindustan3, the manufacturers of Mercedes Benz

sought an injunction against the defendants who were using the famous ‘three pointed star in the

2
Kamal Trading Co. v. Gillette UK Limited, 1988 (8) PTC 1 (BOM)
3
Daimler Benz Akietgesellschaft v. Hybo Hindustan, AIR 1994 Del 239
Page | 13
circle’ and the word ‘Benz’. The Court granted injunction against the defendants who were using
these marks for selling apparel.

Similarly, in Whirlpool Co &Anr v. N R Dongre4, the plaintiff, Whirlpool had not subsequently
renewed their trademark after the registration of the same in 1977. At the relevant time, the
plaintiff had a worldwide reputation and used to sell their machines in the US embassy in India
and also advertised in a number of international magazines having circulation in India. However,
the defendant started using the mark on its washing machines. After an action was brought against
them, the Court held that the plaintiff had an established ‘trans border reputation’ in India and
hence the defendants were injuncted from using the same for their products.

Hence, HMT Pvt. Ltd. should be entitled to protection of its TM in India. Any failure on the part
of the judiciary to do so would act as a deterrent for other foreign well known entities from
establishing themselves in India.

ISSUE 2:

Whether the alleged misrepresentation of the TM is maintainable on the ground that the
defendant has honestly and bonafidely conceived and adopted the trademark ‘HumTum’?

Misrepresentation can be both intentional and unintentional, what has to be seen is whether the
defendant is selling his goods in such a way that a common ordinary man would confuse his good
to that of the plaintiff's. As stated in Telemart Shopping Network Pvt Ltd vsTvc Life Sciences
Ltd & Anr5:

“The word misrepresentation does not mean that the plaintiff has to prove any malafide intention
on the part of the defendant. What has to be established is the likelihood of confusion in the minds
of the public, (the word "public" being understood to mean actual or potential customers or users)
that the goods or services offered by the defendant are the goods or the services of the plaintiff.”

The law of passing off thus does not protect the interest of the owner of the trademark but of the
consumers also against misrepresentation. It was held in the case of Consumer Distributing Co.
v. Seiko Time Canada Ltd6.

4
Whirlpool Co &Anr v. N R Dongre, 1996 (5) SCC 714
5
Telemart Shopping Network Pvt Ltd vsTvc Life Sciences Ltd & Anr, Delhi High Court CS(COMM) 115/2016
6
Consumer Distributing Co. v. Seiko Time Canada Ltd, (1984) 1 S.C.R. 583
Page | 14
In Laxmikant V. Patel v. vs. Chetanbhai Shah7 the Hon’ble Supreme Court held that Passing
off cases are often cases of “deliberate and intentional misrepresentation, but it is well settled that
fraud is not a necessary element of the right of action and the absence of the intention to deceive
is not a defence in an action for passing off though proof of fraudulent intention may materially
assist a plaintiff in establishing probability of deception.”3

In ICC Development (International) Ltd. vs. Arvee Enterprises8, the Delhi High Court cited
the case of Erven Warnik Besloten Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. &
Anr.9, wherein the House of Lords identified five characteristics which must be present in order
to create a valid cause of action for “passing-off”. The House of Lords held that “passing-off” is:

1. A misrepresentation;
2. Made by a trader in course of business;
3. To prospective customers of his or ultimate consumers of goods or services supplied by
him;
4. Which is calculated to injure the business or goodwill of another trader which can
reasonably be foreseeable; and
5. Which causes actual damage to a business or goodwill of the trader by whom the action is
brought or in a quia time (because he fears or apprehends) action will probably do so.

It is not essential that the plaintiff must establish fraud on the part of the defendant in a passing
off action. In case of Horlicks Ltd. Vs. Bimal Khamrai10, While granting injunction against the
defendants using the trademark “Horlioks”, the Delhi High Court held that “the use of the
offending mark by the defendants to imitate the plaintiff’s trademark appears to be flagrant and
blatant attempt on the part of the defendants to imitate the plaintiff’s trademark with a view to
deceive the unwary purchasers and exploit and encash on their goodwill in order to pass off their
goods as that of the plaintiff’s. the law does not permit anyone to carry on his business in such a
way as would persuade the customers in believing that the goods belonging to someone else are
his or are associated therewith. Where there is possibility of confusion in business, an injunction
would be granted even though the defendant adopted the name innocently.”

7
Laxmikant V. Patel v. vs. Chetanbhai Shah, AIR 2002 SC 275
8
ICC Development (International) Ltd. vs. Arvee Enterprises, (2003) 26 PTC 245(DEL)
9
Erven Warnik Besloten Vennootschap & Anr. Vs. Townend & Sons (Hull) Ltd. & Anr, (1979) 2 All ER 927
10
Horlicks Ltd. Vs. Bimal Khamrai , (2003) 26 PTC 241 (Del.)
Page | 15
The counsel submits that the respondant’s use of an almost identical TM should amount to
misrepresentation. Also it is clear from the submissions in the above issue that the
misrepresentation was made in course of trade to a certain segment of the public causing injury of
goodwill to the company of the petitioner. Hence, counsel submits that there is no need for the
court to further delve into the issue whether the misrepresentation was intentional or not.

ISSUE 3:

Whether the appellants are not entitled to any relief on the ground of acquiescence and
waiver as the respondents has been continuously, extensively and uninterruptedly using the
same since the year 2011.

The counsel for the appellants would like to drew the attention of this Hon’ble court to Section 33
of the Act, which reads as follows:-

"33. Effect of acquiescence.-

(1) Where the proprietor of an earlier trade mark has acquiesced for a continuous period of
five years in the use of registered trade mark, being aware of that use, he shall no longer be
entitled on the basis of that earlier trade mark

(a) to apply for a declaration that the registration of the later trade mark is invalid, or

(b) to oppose the use of the later trade mark in relation to the goods or services in relation to
which it has been so used, unless the registration of the later trade mark was not applied in good
faith.

(2) Where sub-section (1) applies, the proprietor of the later trade mark is not entitled to
oppose the use of the earlier trade mark, or as the case may be, the exploitation of the earlier right,
notwithstanding that the earlier trade mark "may no longer be invoked against his later trade
mark".

In Carreefour v. Suburaman11, the hon’ble court interpreted Section 33(1) and prescribes two
preconditions viz., (i) that there must be acquiescence for a continuous period of five years in the
use of a registered trade mark; and (ii) that the proprietor of the earlier mark acquiesced to the use
of the registered mark in spite of being aware of that use. In other words, the respondents should

11
Carrefour v. V. Subburaman, 2007(35) PTC 225
Page | 16
not only prove knowledge on the part of the applicant but also prove use of the mark for a
continuous period of five years.Moreover, the words "acquiesced for a continuous period of five
years in the use of a registered trade mark" appearing in Section 33(1) makes it clear that such
acquiescence by the proprietor of an earlier mark, should be in relation to a registered trade mark.

The issue of acquiescence was considered in great detail by the Supreme Court in Ramdev Food
Products Pvt Ltd v. Arvindbhai Rambhai Patel12 considering the judgment of M/s Power
Control Appliances v. Sumeet Machines Pvt. Ltd.13, the Apex Court crystallised the law on the
point in para 105 as follows:-

"105. Acquiescence is a facet of delay:- The principle of acquiescence would apply where: (i)
sitting by or allow another to invade the rights and spending money on it; (ii) it is a course of
conduct inconsistent with the claim for exclusive rights for trade mark, trade name, etc. It implies
positive acts; not merely silence or inaction such as is involved in laches ".

In John Inc. v. Doctor & Company14, Delhi High Court observed that “in trade marks case the
plea of acquiescence is available only if the defendant proves that the plaintiff has been not only
standing but also turning a blind eye for substantial period.”

It is humbly submitted that the appellants served a cease and desist notice to the respondents
when the appellants came across the use of their TM by the respondents which proves that the
appellants didn’t allow the respondents to invade their rights and since the respondents didn’t
complied with the notice, the appellants filed a suit for passing off.

Moreover, the respondents were using the TM since the year 2011but obtained registration of the
trade mark in 2014. Therefore, the date of commencement of any acquiescence, on the appellants
side, starts from 2014 and not 2011. Hence, the appellants cannot be held to have acquiesced to
the use of the mark by the respondents, as the suit has been instituted within five years of their
registration.

It is humbly submitted that the Ld. District Judge erred by not granting any relief to the appellants
on the ground of acquiescence.

12
Ramdev Food Products Pvt Ltd v. Arvindbhai Rambhai Patel, [AIR 2006 SC 3304]
13
M/s Power Control Appliances v. Sumeet Machines Pvt. Ltd, (1994) 2 SCC 448 : 1995 (15) PTC 165 (SC)
14
John Inc. v. Doctor & Company, 2002(24) PTC 29 (Del)
Page | 17
ISSUE 4:

Whether the hon’able district judge failed to properly appreciate the ground that the
defendant’s TM is deceptively similar to that of the plaintiff’s TM so as to cause confusion
in the mind of the general public commonly purchasing them since the defendants are in the
same line of business as that of the plaintiffs?

The Hon’ble Supreme Court in Cadila Health Care Ltd. Vs. Cadila Pharmaceuticals Ltd.15,
held that the following factors to be considered in case of an action for passing off action of an
unregistered trademark for deciding the question of deceptive similarity:-

1. The nature of the marks, i.e, whether the marks are word marks or label marks or
composite marks, i.e, both words or label works.
2. The degree of resemblance between the marks, phonetically similar and hence similar in
idea.
3. The nature of goods in respect of which they are used as trademarks.
4. The similarity in nature, character and performance of goods of the rival traders.
5. The class of purchasers who are likely to buy the goods bearing the marks they are likely
to exercise in purchasing and/or using the goods.
6. The mode of purchasing the goods or placing orders for the goods.
7. Any other surrounding circumstances which may be relevant in the extent of
8. dissimilarity between the competing marks.”
Moreover the Judgment of the Division Bench of the Delhi High Court in Rob Mathys India
Pvt. Ltd v. Synthes Ag Chur16, observed in this regard on page 721, which read as follows:-

" We must readily support decisions which seek to promote commercial morality and discourage
unethical trade practices of making such a situation where Indian purchaser/consumer starts
presuming franchise like connection between foreign products and Indian Products which either
cause confusion or which appear to be deceptively similar. Indian Courts have consistently and
rightly disapproved the attempt by Indian trade and industry to bask in the warmth of, and make
illicit profit from, a reputation not earned legitimately by their own effort but built by others
elsewhere, by the short cut of trickery and passing off and thus protected not only private rights
but commercial morality and thus expanded the scope of passing off action to meet that end. This

15
Cadila Health Care Ltd v. Cadila Pharmaceuticals Ltd, 2001 PTC 541 (SC)
16
Rob Mathys India Pvt. Ltd v. Synthes Ag Chur, 1997 (17) PTC 669 (DB)
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approach is essential to protect the interest of Indian users i.e., public in general. But, this
approach must be confined to same or similar products or at the most closely related products and
services. This approach cannot be extended to totally different kind of products. In this later area,
in order to protect national economic interest English rigidity appears to be essential." and held
that the trade mark/name used by the applicant for the past 47 years throughout the world, has to
be protected, in order to promote commercial morality and discourage unethical trade practices.

In the case of Milmet Oftho Industries v. Allergan Inc.17 a dispute between two pharmaceutical
companies over an identical mark. Both the claimant and the defendant were using the mark
'OCUFLOX' in respect of an eye care product. The defendant argued that it introduced the
medicinal product under the 'OCUFLOX' mark in India first and therefore it should succeed
against the claimant. The Supreme Court while deciding in favour of the foreign claimant stated
that “the mere fact that the claimant has not been using the mark in India would be irrelevant if
they introduced the mark prior to the defendant in the world market.”

The counsel submits that the English way of pronouncing an English word by Englishmen, which
it may be stated is not always the same, may not be of much assistance in our country in deciding
questions of phonetic similarity. It cannot be overlooked that the word is an English word which
to the mass of the Indian people is a foreign word. Though the word ‘HumTum’ is a popular hindi
expression, it cannot be denied that the first impression on viewing of the TM gives the
impression that the labeled goods have been manufactured by the company of the petitioner as
both the appellants and respondents are in the same line of business and moreover the appellants
are using the TM ‘HumTum’ since 1966 and secured its earliest registration for the mark in the
year 1970 in the United Kingdom.

Hence, the counsel submits that the company of the petitioner be granted right to protect its
trademark from being ‘passed off’ in reference to section 27(2) of The Trade Mark Act,1999.

17
Milmet Oftho Industries v. Allergen Inc., (2004) 12 SCC 624
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 PRAYER

Wherefore in the light of facts stated, issues presented for adjudication, contentions raised,
authorities relied upon and arguments advanced, it is most humbly prayed before this Hon’ble
Court that it may be pleased to:

1. Set aside the order passed by the Hon’ble District Court.

2. Pass an order for permanent injunction, restraining the respondents from manufacturing,
marketing, selling, exporting, offering for sale or advertising, any product under the trade
mark "Hum Tum" or from using the same as a trade name thereby infringing the trade
mark "Hum Tum".
3. To pay as damages to the appellant the profits earned by the respondent from the use of
the TM during the entire period of their business activities from 2011 till date.

AND / OR

Pass any other order that it may deem fit in the interest of Justice, Equity and Good
Conscience.

(Counsels for the Appellant)

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